Due Diligence, Clearance and Licensing

Coats + Bennett assists clients in clearance matters to determine whether a new product or trademark to be introduced into the market could cause an infringement issue. For patents, we have a wealth of experience conducting clearance/freedom-to-operate studies. These studies include searching for patents related to the new product and then analyzing the scope of these patents. In instances when a specific patent is identified as being potentially problematic, we have the expertise to analyze detailed non-infringement or invalidity aspects and prepare a corresponding opinion. A non-infringement opinion provides a detail analysis of the patent, the scope of the claimed invention, and why the new product falls outside the scope of and does not infringe the patent. An invalidity opinion again provides a detailed analysis of the patent and scope of the claimed invention, and a determination that the patent is invalid based upon an older patent or printed publication and/or a defect in the patent itself. We also assist clients in honoring the patent rights of others by modifying product plans (“designing around”) the scope of patent claims.

For trademarks, we advise clients on mark adoption and selection, and we provide counseling on what the law (and marketing research) recognizes as inherently strong marks. From the selection stage, we routinely assist clients with researching whether the use of the new mark would be likely to infringe the pre-existing trademark rights of others. This involves surveying the market, including federal and state registries, to identify whether the new mark is confusingly similar to one or more of the other marks. Our trademark analysis may fall within different levels of detail depending upon the needs of the client and the specific situation. Like patents, we can assist clients with modifying their brands to lessen the chance for future conflict with senior brand owners.

Coats + Bennett is also uniquely situated to assist in due diligence studies of an IP portfolio. This may occur when considering whether to enter into an agreement to license or purchase IP rights from a third party, or to acquire an entity possessing such rights in a merger and acquisition. Our due diligence studies provide an accurate determination of the relative strength and scope of the IP rights in question.

We provide clearance and due diligence assistance for both domestic and international intellectual property interests.

Once intellectual property rights have been obtained, Coats + Bennett is here to help with leveraging your assets. Licensing, for example, offers an avenue through which you can enhance the bottom line of your business. In exchange for permission to use your intellectual property rights, you stand to gain royalties, assets or other rights. When you are considering this possibility, Coats + Bennett can help you with sound legal advice and assistance with valuation, contract drafting and negotiations.